R Thomas & a Garnham v Jiejing Pty Ltd
[1994] APO 4
•13 January 1994
OFFICIAL notice
decision of a delegate of the commissioner of patents
Application : No. 42052/89 in the name of R Thomas & A Garnham
Title: Symbol Definition Apparatus
Action: Extension of time for acceptance under S.223(1). Objection thereto by Jiejing Pty Ltd
Decision: Issued .
1.An extension of time under ss.223(1) granted, on the basis that a delegate failed to recognise that a different extension of time under ss.223(1) was justified, and that failure to so recognise prevented acceptance from occurring within the time allowed.
2.Errors of a person which are claimed to be due to incorrect advice from the Commissioner fall under ss.223(1) only if the person:
-sought advice from the Commissioner;
-in seeking the advice, provided all relevant information, or provided sufficient information for the Commissioner to realise that further information was required before providing the advice;
-the advice given was demonstrably wrong;
-the applicant acted on that wrong advice; and
-as a result, a relevant act was not done within the required time.
3.Following the decision dated 24 December 1993 of the Federal Court, on petty patent 616154, Commissioner not prepared to accept the application in its present form; an extension of time under s.223(2)(b) granted to enable the applicant to propose further amendments.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 42052/89 by R Thomas & A Garnham, a request under s.223(1) for extensions of time for acceptance of the application, and objection by Jiejing Pty Ltd
background
Application 42052/89 is a national phase application derived from PCT application PCT/AU89/00379 filed on 5 September 1989 which claims priority from Australian provisional PJ 0247 of 5 September 1988.
The first examination report was issued on 14 June 1991. The report indicated (as usual for first examination reports) that:
You have 21 months from the date of this report to overcome my objection(s). However, if you file your response after 12 months from the date of this report a response fee is payable."
The original "final date for acceptance" of the application was therefore 14 March 1993.
Subsequently (as detailed below) there were two extensions of time for acceptance granted under the provisions of s.223(2). The application has not yet been accepted. The present matter concerns an application under s.223(1) alleging an error or omission by the Commissioner.
Initially, the parties to the present action did not request to be heard in the matter, but requested a decision based on written submissions. I gave each party a considerable period to file and serve their arguments in support of their position in the matter, and a period to file and serve any submissions in response. Subsequently Jiejing indicated that they did not think that a correct decision could be arrived at without an oral hearing at which they could put certain questions to Mr Thomas, and requested to be heard. I acceded to that request, and a hearing was set down in Brisbane for 16 December.
Because the application has not been accepted, there are only limited documents on the file that are OPI. Consequently, and after obtaining certain undertakings, I granted access under s.56(1)(b) of the Act to Mr Anese (representing the objectors) to material on the file relevant to the extension of time application.
Prior to the hearing, statutory declarations were provided by Messrs C, B and F, all employees of the Australian Industrial Property Organisation.
At the hearing, Messrs Thomas and Garnham were represented by Mr J J Garnsey of counsel; and Jiejing was represented by Mr C Anese (patent attorney of Cullen & Co., Brisbane). In the course of the hearing there was cross-examination of Mr Thomas, Mr Garnham, Mr C, and Mr F.
When the present dispute arose, I was conscious that I had previous involvement with the file. At an early stage I enquired of both parties whether they objected to my determining the present matter, drawing particular attention to a document which records my conclusion that a request for an extension of time to 16 August was not justified. In response, both parties stated they did not object to my determining the present matter. I made a similar enquiry soon after the commencement of the hearing - again with no objection. In this decision I have set out where I have had involvement with the file.
S.223(2) Request
At the hearing there was some discussion about whether there was a pending S.223(2) request for an extension of time and the possible need for a further S.223(2) request for an extension of time should the S.223(1) request be unsuccessful. As any such further S.223(2) request would be for a period in excess of 3 months, it would have to be advertised for opposition purposes (S.223(4)). At the hearing, I determined that
there was no pending S.223(2) request, as the one in question had been granted on 2 September 1993, and
ii)having regard to all the circumstances, it was inappropriate for me to hear the parties in respect of a request not yet made, nor in respect of any s.223(2) request that might be made during the course of the hearing.
On this latter point, I note that at the hearing Mr Garnsey indicated that an application under S.223(2) was to be made later that day. In the event, the hearing did not conclude until 8 pm - which presumably precluded the making of the application that day. An application was made on 4 January 1994.
The Relevant Law
The present matter involves a request for an extension of time under the provisions of S.223(1). That subsection provides:
223.(1) Where, because of an error or omission by the Commissioner, a Deputy Commissioner or an employee, a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner must extend the time for doing the act.
[I note here that in this decision, I have used "the Commissioner" as an abbreviation for "the Commissioner, a Deputy Commissioner or an employee" as referred to in ss.223(1) - unless the context dictates otherwise.]
For the grant of an extension of time under section 223(1), there is only one basic matter for consideration by the Commissioner - viz. whether the failure to meet the time limit is 'because of' an error or omission by the Commissioner. If that is established, the Commissioner MUST grant an extension of time for doing the act; unlike s.223(2), there are no discretionary considerations once a relevant error has been established.
The definition of an error or omission (in the context of the equivalent section 160 of the Patents Act 1952) was expressed by Jenkinson J in Kimberly-Clark Ltd v Commissioner of Patents(No 3) 13 IPR 569, at 579 to 580 in the following terms:
"the word 'error' is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips."
It must also be shown that the relevant error or omission caused the failure to do an act (in this case to gain acceptance) within the prescribed time. Jenkinson J in the Kimberly-Clark (No 3) case, supra, described the nature of the causal link in this way:
"All that is required is once an error or omission has been established that there be some link between that error or omission and the failure to lodge the notice of opposition within three months."
It is clear from this formulation that for s.223(1) to apply in the present case there must be a causal connection between a relevant error or omission of the Commissioner and the failure to gain acceptance. However, the error or omission must not be too remote from the failure to gain acceptance. That is, can it be said that acceptance of the application would reasonably have been expected had the error or omission not occurred.
S.223(1) is provided to remedy an error or omission of the Commissioner; the provision has not (to my knowledge) been the subject of any judicial interpretation. However a relevant breach by the Commissioner of duty of care in the provision of information (see Shaddock & Associates Pty Ltd v Parramatta City Council [No.1] 150 CLR 225) will in my view, constitute error or omission in the context of ss.223(1) - provided there is a sufficient causal relationship between the provision of information and the failure to do the act within the required time.
Basis for a Third Party Objecting to the Extension
The Act does not require an extension of time under s.223(1) to be advertised for opposition purposes under s.223(4). However, s.224(1)(a) provides that any decision under s.223 may be reviewed by the Administrative Appeals Tribunal; furthermore:
subsection 27.(1) of the Administrative Appeals Tribunal Act provides that an application for a review of a decision may be made by any person whose interests are affected by the decision; and
ii.Subsection 3(4)(a) of the Administrative Decisions (Judicial Review) Act provides that a person aggrieved by a decision includes a person whose interests are adversely affected by the decision
Consequently, even though s.223 does not provide for advertisement for opposition purposes of a request under s.223(1), the practice of the Commissioner is that he will not proceed to grant such extensions if he has good reason to believe that there is a person whose interests may be adversely affected by granting the extension - until he has ascertained whether that person objects to the Commissioner granting the extension sought. (This situation arises most commonly during opposition proceedings, where there is clearly an interested third party.)
In the present case, the attorney for the objector wrote to the Commissioner on 23 August 1993 in the following terms:
"In the event that an application is made to restore the above-referenced application, we respectfully request that you notify us."
The Commissioner sought advice from the objector of whether they objected to the extensions sought. The present action arises as a result of Jiejing objecting.
File History
"It is no easy task to pick one's way from truth to truth through besetting errors." - Peter Mere Latham (1789-1875)
A review of the file shows that there has been a great deal of confusion in the processing of the application, with many apparent errors having occurred. I do not propose to here elaborate all actions and errors that are apparent from the file; rather I will concentrate on those relevant for this decision.
There are three persons in the Australian Industrial Property Organisation who feature in certain relevant actions. They are:
Mr C, who is the manager of the Brisbane state office of the Australian Industrial Property Organisation (which is a sub-office under the provisions of subsection 205(2) of the Act);
Mr F, who is the examiner of patents who handled the examination of the application as a delegate of the Commissioner; and
Dr B, who was at relevant times acting in one of the positions of an Assistant Commissioner of Patents.
It is appropriate to note here that the powers delegated to Mr F are (and were) limited to those directly related to the examination function; he had no delegation of any powers relating to s.223 of the Act. On the other hand, Dr B (acting in the position of Assistant Commissioner) had an extensive delegation of the Commissioner's powers, including the power to grant or refuse applications for an extension of time under s.223.
The history of the file, in so far as it is relevant to an understanding of the present situation, is as follows:
Mr F issued the first examination report on 14 June 1991. As a result, the final date for acceptance was 14 March 1993.
On 2 October 1992, the attorney for the applicants advised that they were no longer the address for service of the applicants, and gave a new address for service (a PO Box in Kallangur, Q'ld, being the address of one of the applicants).
On 30 April 1993 (ie 7 weeks after the (original) final date for acceptance), one of the applicants requested an extension of time for acceptance to 14 June 1993. The reasons given in the request for the extension were:
"- a breakdown in communications between the applicants and our patent attorneys led to our mistaken belief that time to respond to the examination report had not lapsed
additionally
- because of Federal Court action pertaining to infringement of our related petty patent 616154 I wrongly assumed that the "clock had stopped" on all outstanding matters."
On 14 May 1993 I granted the extension sought. The applicants were advised of that grant by letter dated 18 May 1993 (and faxed on that day). That letter also stated:
"... the final date for acceptance is now 14 June 1993, and that further extensions of time related to the court action on their petty patent will not be likely to receive favourable consideration, whether or not the court issues its decision before that time."
On Friday 11 June the applicant filed a response (dated 9 June 1993) to the first examination report in the Brisbane state office.
Apparently the response did not reach Mr F until 16 June, one day after the final date for acceptance. (Note: 14 June was a public holiday, so that the final date for acceptance was, in practical terms, 15 June - see s.36(2) of the Acts Interpretation Act 1901).
On 25 June Mr F issued a second examination report. That report raised a number of substantive objections which (of their nature) could be readily overcome. The report indicates that the due date for a response was 16 June 1993. This date is 2 days after the actual final date for acceptance of 14 June 1993 (as well as being 9 days previous the date of the report).
On 9 July 1993, the applicants requested a further extension of time under s.223(2), of one month. The extension sought was for the period 16 June to 16 July. The reasons stated were:
"The current examining officer's report (2nd) has only just been received by me due to some problems with the geography of our situation and in fact the report was received much sooner than expected. We understand that the examining officer did not receive our submission on his desk until two days after the application had lapsed. No further amendments are being requested except for correction of a typographical error."
On the same day, the applicants also filed their notice of entitlement, and faxed a statement of proposed amendments to the examiner.
On 21 July, a clerk wrote to the applicants advising them that the application could not be considered by the examiner because no fees had been paid for the s.223 request. She also queried the dates of the extension sought, being from the 16 June rather than the 14 June.
10.On 22 July the clerk sent a fax to the applicants (apparently in response to a telephone enquiry). The fax confirmed that the date of 16 June was the correct date for the commencement of the extension. It also indicated that an extension of two months would be required.
This fax was sent after the clerk sought clarification from Mr F. It appears that Mr F indicated to her that the relevant date for the commencement of the s.223 extension was 16 June (and not the 14th) because of the late arrival of the response to the examiner.
I note that as at 22 July there had been no grant of an extension of the time for acceptance past 14 June 1993. Furthermore, Mr F had no power or authority over and above the application of s.36(2) of the Acts Interpretation Act, to determine a final date for acceptance different from 14 June 1993.
11.On 26 July the applicant paid the fees for two months extension under s.223, and asked for the s.223 request to be correspondingly amended to be for the period 16 June to 16 August.
12.On 16 August, the file was before me to consider the s.223(2) request. The file records that I concluded from the information available that:
a.allowing for the most beneficial application of s.223, and having regard to the response to the first report being filed 3 days before the final date for acceptance, and the examiner subsequently issuing a report on 25 June, an extension of time past 28 June (ie 3 days past 25 June) could not be justified on the basis of when the response reached the examiner; and
b.the applicant had provided no justification to support the extension on the ground of the geography, particularly since the report was sent to the address given on the applicants' letter of 8 July.
and thus there was no justification for an extension of time under s.223(1) or (2) to any date past 28 June.
I understand the applicants were advised of this by phone, on 16 August. A letter detailing my conclusions was sent on 17 August.
13.On 17 August the applicants responded, and provided further grounds to justify the extension. Those grounds were:
a.that they had been previously advised by an officer of the Brisbane state office that the application was "in force to 5th September 1993"; and
b.the report dated 25 June was received on 8 July. Although addressed correctly, the Post Office delivered it to another address which was only visited every one or two weeks.
It also stated that
"as a result of discussions with the examining officer I believe all of the claims are now in an acceptable form".
14.On 20 August, Mr F recorded on file that the applicants had given him "permission to rewrite his statement of proposed amendments in a suitable form". The file records a typed statement of proposed amendments dated 20 August 1993, signed by Mr F on behalf of the applicants. (On review, I am satisfied that statement of proposed amendments is indeed merely a re-presentation of the statement of proposed amendments faxed on 9 July by the applicants.)
15.The further consideration of the s.223 request was done by Dr B. The file records that he was:
"unable to confirm the situation regarding the 'misinformation' that Mr Thomas received at the Brisbane sub-office. However, there may have been an error on the part of an employee of the office. Consequently, I consider that it is appropriate to allow an extension of two weeks on the basis of this action".
Dr B also allowed an extension to 28 June (as referred to in para 12 above). The file records the delegate's decision as:
"The total extension brings the time for acceptance to 12 July 1993. I allow both extensions under s.223(1)"
This decision was made on 30 August 1993. The applicants were advised by phone that day.
I note (from the declarations of both Messrs F and B) that at the point in time when the extension was granted, the acceptance document had not in fact been executed.
16.Later on that same day, the examiner purported to accept the application. The acceptance document was signed bearing the date of 12 July 1993. It also referred to the statement of amendments dated 20 August 1993 (which, of course, did not exist at the purported date of signing the document of acceptance).
It is appropriate to observe here that the Commissioner has no legal authority to accept a lapsed application. When an application has lapsed, it must be restored before the application can be accepted. Any document purporting to accept an application on a date when it was lapsed cannot have any lawful effect; nor can the subsequent restoration of the application validate such a document. Consequently, the purported acceptance of the application by the examiner was, and continues to be, of no lawful effect.
The applicant was orally advised of the purported acceptance; and the Office's computer system recorded the purported acceptance of the application.
17.On 23rd August (ie 1 week before the delegate granted the extension of time), the attorney for the objector filed a letter requesting to be notified of any attempt to restore the application. Having regard to
the position of that letter on the correspondence file; and
the likely time for correspondence filed in the Brisbane state office to reach a file not held in Registry - especially when there was no indication on the correspondence of any urgency;
I conclude that this letter did not reach the file until after Dr B had granted the extension of time (and after Mr F purported to accept the application).
18.On 2 September, Dr B granted the s.223(2) request for an extension of time for acceptance, to 14 August 1993. The applicants were advised that the "time in which to obtain acceptance has been extended to 14/08/93". As is usually the case when a s.223(2) extension is granted, the file does not record any reasons why the extension was granted, over and above the documents filed by the applicant.
19.Following enquiries on behalf of the objector the Deputy Commissioner reviewed the file; the matter of the ineffective acceptance came to attention. Consequently the parties were advised circa 10 September that the application had not in fact been accepted. The parties were also advised that the current status of the application is that it lapsed on 12 July 1993 (although on review it in fact lapsed on 14 August 1993).
Subsequently, the applicant requested the Commissioner grant a s.223(1) extension of time. The objectors were informed of this, and objected.
Applicant's WRITTEN Submissions
The applicants written submissions refer to a number of the matters I referred to above, and to some discussions with Messrs F and C. Additional submissions of the applicants as relevant to an error or omission by the Commissioner are summarised as follows:
The examiner's second report was not necessary. Except for an obvious typographical error, no modifications to the claims were made in reply.
All relevant documents were in fact filed with the Patent Office on 9 July. Since an extension of time for acceptance was granted to 12 July, acceptance should have occurred by that date.
"I was at all times led to believe that the application would remain valid until 5 September 1993." The staff at the Brisbane state office gave them "the impression that as long as extra fees were paid for extensions the application would remain valid until 5/9/93 as other fees had been paid up until that time."
They allege they were further misled because the state office staff "do not understand how and why an application lapses".
Objector's WRITTEN Submissions
The objector (Jiejing Pty Ltd) has a direct interest in this application through a court action on Petty Patent 616154 (filed as a divisional application from the present application). A declaration by Mr Anderson is relied upon to establish Jiejing's interests in the present matter.
The objector's submissions relevant to the existence of relevant error or omission, may be summarised as:
The final date for acceptance as specified in the first examination report was 14 March 1993. No response was filed until after that date;
Even if the applicants were not aware of the significance of the initial deadline, they must have been aware that it would lapse if not accepted by the extended deadline of 14 June 1993.
The applicants cannot rely upon their "ignorance or stupidity" as grounds for obtaining an extension of time. It would be farcical to encourage applicants to benefit through ignorance. To grant concessions to applicants who feign ignorance or do not bother to acquaint themselves with the proper procedures is to penalise those applicants who follow the procedures set down in the Act and Regulations.
The applicants have a duty to show that they have been diligent in seeking to gain acceptance of their application.
There is no evidence whatsoever that the failure to gain acceptance by the due date was due to an error or omission by the Commissioner.
DECISION
Mr Anese submitted that, in his training as a Patent Attorney, he was taught that the 21 months allowed for acceptance should never be transgressed; and that Patent Attorney practice was to ensure that this was the case. Furthermore, a person should not receive more favourable treatment merely because they were processing the application themselves.
I agree that persons taking any action before the Commissioner should be treated on an equal footing - that is to say, an applicant should not receive particular favour because they do, or do not, use a patent attorney. Of course, this is not to say that the issues involved will necessarily be the same, as (for example) the errors or omissions of a knowledgeable person are likely to be quite different to those of a person with little knowledge; in this regard I am unaware of any basis for imputing an equal level of knowledge upon all people who deal with the Commissioner.
With respect to the time for acceptance, it is well established law that s.223 can be used to extend the time for acceptance (Lehtovaara v A/Deputy Commissioner (1981) 39 ALR 103). It is also appropriate to note that s.223 is a remedial provision to correct errors or omissions, and is frequently used by (inter alia) patent attorneys to correct errors or omissions that they have committed - including failure to gain acceptance in time. Furthermore, a person cannot arbitrarily rely on s.223 to gain an extension of time - there must be a relevant error or omission (which, of course, cannot be planned in advance!). Thus Patent Attorney practice to ensure acceptance occurs within the 21 months allowed is clearly mandated by the provisions of the Act.
Consequently, in the present case I see no issue of particular relevance arising out of the mere fact that the applicants are prosecuting the application themselves, or that the request is to extend the time for acceptance.
Reliability of Witnesses
At the hearing there was examination of Messrs Thomas, Garnham, C, and F. There is one matter regarding the reliability of witnesses that I need comment upon.
During the examination of Mr Thomas, Mr Anese asked a number of questions regarding whether Mr Thomas was acting on behalf of his co-applicant Mr Garnham. (I note here that most of the correspondence from the applicants was signed by Mr Thomas alone.) Mr Thomas stated that he indeed was acting on behalf of Mr Garnham, and had Mr Garnham's authority - although such was not in writing.
Following the examination of Mr Thomas, Mr Anese produced a letter written by Mr Garnham some six days before the hearing which stated (inter alia):
"At no time have I ever authorised Mr Thomas to act on my behalf".
Mr Anese relied upon this contradiction to assert that the evidence of Mr Thomas could not be relied upon.
To give due consideration to this matter, it is necessary to appreciate the circumstances leading up to the document by Mr Garnham. On 11 November, Mr Thomas filed and served a response to Jiejing's submissions in the present matter. It transpires that Jiejing subsequently initiated defamation proceedings against both Thomas and Garnham, in the Supreme Court of Queensland; the action was based on matters contained in that response. Subsequently, Mr Garnham was written to with the following offer:
"I should appreciate you advising in writing forthwith:
(a)as to whether or not you authorised the sending of the enclosed letter, and/or
(b)whether or not you authorised Mr Thomas to assert the letter was sent on your behalf.
If you confirm that the letter was not authorised by you, nor that Mr Thomas was authorised on your behalf to assert the said letter was sent on your behalf, then I will recommend to my client that the Supreme Court proceedings be forthwith discontinued against you".
to which Mr Garnham responded with the document containing the above quote.
In my view, it is clear from the conduct of Messrs Garnham and Thomas at the hearing, and an overall consideration of the documents on file, that there is no dispute between them of who has the carriage of the prosection of their application. I am fully satisfied that Mr Thomas has been prosecuting the application on behalf of Mr Garnham, with Mr Garnham's authority - although this is not to say that there have never been any disputes between the individuals on specific matters. As a result, I do not find the document executed by Mr Garnham impugns the reliability of the evidence of Mr Thomas.
Validity of the Examiners Second Report
In their written submissions the applicants contend that the examiner's second report was unnecessary.
It is appropriate for me in these proceedings to consider the validity of an examination report - see Lehtovaara v A/Deputy Commissioner (1981) 39 ALR 103. If the report was issued in error that may constitute an error or omission in the context of ss.223(1) that prevented acceptance from occurring within the time allowed.
On review, I note that the first item (objection no.4) objects to the absence of a notice of entitlement (a document required under Regulation 3.1(2)), there being no such document on file. I am therefore satisfied that, irrespective of the other objections raised, the second examination report contained a valid and serious objection. I also note that the notice of entitlement was not filed until 9 July 1993.
Amendments Dated 20 August 1993
On August 20, Mr F rewrote the applicants' statement of proposed amendments, which was written in the style of a letter. There is no record on file of any formal examination report objecting to the presentation of the statement of proposed amendments.
I observe that:
-to the extent that the statement of proposed amendments was previously in the form of a letter, the amendments were clearly and unambiguously identified - that is, the form of the statement of proposed amendments was, although undesirable, not such that the Commissioner would necessarily find it objectionable - particularly at such a late stage in its processing; and
-to the extent that Mr F may have indicated the presence of an objection based on the form of the statement of proposed amendments, it is clear from the Lehtovaara decision (supra) that it is appropriate for me to review the correctness of an examination report when considering whether there has been a relevant error or omission by the Commissioner which has prevented acceptance within the required time. As I have indicated above, I do not believe the form of the statement of proposed amendments was necessarily objectionable.
Consequently, although on 20 August the applicant requested the examiner to redraft the statement of proposed amendments, I attach no significance to this event. In particular, I reject any implication that the application was not ready for acceptance until 20 August; in my view, all necessary actions were completed by the applicants on 9 July (apart, of course, for the extension of time for acceptance.)
Errors due to Advice
It was contended for the applicants that an error by the Commissioner occurred in respect of advice given by Mr C on or about 11 June. It was contended that the advice led them to believe that the application would not lapse until September 1993.
The cross-examination of Mr Thomas elicited that he:
never appreciated the significance of the 'final date for acceptance';
ii)understood this date as the date by which he must file a response;
iii)understood that a response would not necessarily overcome all the objections of the examiner, and that further objections may arise;
iv)did not proceed on the basis that he must overcome all objections by the 'final date for acceptance'; and
thought the process was similar to responding to a tender, where the important factor was to get a response in by the specified date.
It is noteworthy to observe here that Mr Anese conceded at the hearing that the applicants intended to have the application accepted - that is, at no material time was there any decision to not attempt to gain acceptance. (I note here that Mr Anese argued that although the applicants intended to gain acceptance, they had no intention of gaining acceptance by the final date for acceptance - but this issue is appropriate to considerations under ss.223(2) rather than 223(1).)
In evidence, Mr Thomas declared that he spoke to Mr C on Friday, 11 June, and was advised (on the basis of a computer enquiry) that the application was "in force to" 5 September 1993. He stated that this mislead him into thinking that his application would not lapse until that date, rather than at the end of the following Monday. In cross-examination, he stated that his impression:
"was reinforced by my discussions with the staff at the local office because the question I was asking was how long was this valid to or how long is this in force to and I was told that the thing was valid until 5 September this year and I couldn't see, it didn't make sense to me I was paying fees until 5 September if in fact couldn't be used, so I wasn't worried about that at all".
Mr C declares that he remembers speaking to Mr Thomas on 11 June (but has no recollection of speaking to him several days earlier). He remembers that Mr Thomas was filing a response to an examination report, which had to be filed before 14 June; from cross-examination it was apparent that Mr C was unaware at the time of why it "had" to be filed by that date. Mr C also states (and I accept) that he himself was fully aware that the field in the computer marked "Date in force to" related to the payment of annual renewal or continuation fees, and that applications could lapse for other reasons, such as failure to gain acceptance by the due date.
The basis on which Mr Thomas formed the view that the final date for acceptance was only a response date, is not at all apparent from the evidence. However, it is clear that Mr Thomas had that view well before 11 June - indeed, he stated in examination that he had never understood that the significance of the final date of acceptance was that all objections must be overcome by that date. I am fully satisfied that the Commissioner did not supply advice which created the applicants' belief that they didn't have to overcome all objections by 14 June.
It was argued on behalf of the applicants that the Commissioner had a duty to recognise that the applicant had an incorrect knowledge or belief of the requirements for acceptance; and that the failure to recognise that incorrect knowledge or belief constitutes an error or omission on the part of the Commissioner. As a general proposition, I do not accept this. A role of monitoring the actions or beliefs of a party is potentially inconsistent with the Commissioner's duty to protect the public interest as, for example, would be a suggestion by the Commissioner during examination that the applicant has claimed their invention too narrowly. Furthermore, well-intentioned suggestions by the Commissioner may well lead to undesirable results (see, for example, Pittsburg Plate Glass Co., (1971) RPC 55 ). Whilst the Commissioner has, as a matter of policy, a desire to be helpful to all that deal with the Patent Office, he cannot become 'my brother's keeper' in the sense of accepting responsibility for monitoring the knowledge or beliefs of persons who have dealings with him.
This is not to say that a person who has a wrong belief, is denied a remedy for a failure to act in time if they acted on that wrong belief. In my view, where a person has formed a mistaken belief of the timing requirements under the Patents Act, the remedy is generally to be found under subsection 223(2) of the Act. Subsection 223(1) of the Act becomes relevant to this situation only if the person concerned:
-sought advice from the Commissioner;
-in seeking the advice, provided all relevant information, or provided sufficient information for the Commissioner to realise that further information was required before providing the advice;
-the advice given was demonstrably wrong;
-the applicant acted on that wrong advice; and
-as a result, a relevant act was not done within the required time.
That is, there must be a clear causal relationship between the actions of the Commissioner and the failure for the required action to occur in the required time, for s.223(1) to be applicable.
In the present case I am of the view that Mr Thomas had an incorrect knowledge of the requirements of the Act as regards acceptance. Mr C declares that at all relevant times he himself was aware that the field 'in force to' on the computer system related to the payment of annual fees, and that applications could lapse for other reasons and I accept this. On 11 June he asked Mr C certain questions, the answers to which apparently confirmed his beliefs; however the exact questions asked of Mr C are not known. From the material before me I am not satisfied that Mr Thomas put all relevant information before Mr C (nor, to the extent that Mr Garnham subsequently put questions to staff at another state office, to those staff) nor provided sufficient information in the circumstances for Mr C to reasonably realise that enquiries regarding the status of examination were required. Consequently I find that the answer provided by Mr C does not constitute an error or omission on the part of the Commissioner within the meaning of s.223(1) of the Act.
If I am wrong in this conclusion, and the information provided by Mr C was misleading or incomplete, and/or Mr C should have enquired as to the examination status, I am nevertheless not satisfied that it can be said that, as a result of that advice, the applicants failed to gain acceptance by 14 June 1993.
The examiners first report was issued on 14 June 1991. Several months later the applicants took over the prosecution of the case themselves - but (from the evidence of Mr Thomas) apparently took no steps to fully acquaint themselves with the examination report until much later. Subsequently, on the second last working day before the extended final date for acceptance (that is, some 500 working days after the first report was issued) they filed their response to that first report; and at the same time asked some questions of Mr C, the answers to which allegedly indicated the application would not lapse for several months. I fail to see how any incorrect advice of the nature alleged by the applicants had any material bearing on the response that was filed that day, particularly since I can only assume the response to the examiner's report being filed was intended to be a full response. There were no objections in the examination report that were in any material way dependent upon the date of lapsing (only a requirement that acceptance occur by 14 June), and thus the response to the examination report was not in any way dependent upon the answers to the questions put to Mr C. That is, the answers by Mr C had no bearing whatsoever on whether acceptance occurred in time; rather (in so far as the applicants' dealing with the Brisbane state office are concerned) it was the failure by the applicants to respond to the first examination report until virtually the last minute.
This is clearly demonstrated by the fact that the response filed on 11 June did not include a notice of entitlement as required under reg. 3.1(2) of the 1990 Act [nor the equivalent "declaration" as reported on in the first examination report, and as required by s.35(3) of the 1952 Act]. That is, irrespective of what Mr C did or should have told Mr Thomas regarding the status of his application, the response filed that day was not sufficient to gain acceptance by the due date. There is therefore no basis to ascribe the failure to gain acceptance by that date to an error or omission of Mr C, nor to any other staff members of the Brisbane State Office.
I have come to this position after having had the benefit of hearing evidence from the individuals involved, as well as their declarations. Dr B granted an extension of time to 12 July 1993 under s.223(1) on the basis of (inter alia) the possibility of Mr Thomas receiving misinformation at the Brisbane state office - but without having the benefit of that evidence nor those declarations. It is not open for me to review Dr B's decision (see ex Parte Mole Engineering Pty Ltd 147 CLR 340). Rather it is sufficient for me to conclude that there is no justification for any further extensions of time under ss.223(1) arising from the dealings of Mr Thomas with staff at the Brisbane state office.
S.223(2) request to 14 August
Before proceeding further in this decision, it is necessary to clarify the details of the s.223(2) request filed on 9 July.
The request as originally filed was for one month, from 16 June to 16 July. The applicants subsequently amended that to be from 16 June to 16 August.
The date of 16, rather than 14, was apparently specified on the advice of Mr F. As I indicated previously, a clerical officer queried this date with Mr F, who confirmed that it was based on the date the response to the second report reached him; also, Mr F had no authority to determine a final date for acceptance different from 14 June.
The request was allowed by Dr B on 2 September. Allowance occurred by way of him signing an office form in the appropriate location. The form shows, in ink, the dates for the extension as being 16 June to 16 August; but the number 16 is circled in pencil at both locations, and the number 14 penciled in adjacently. The applicants were subsequently advised by letter that the extension was granted to 14 August.
For certainty, it is necessary to establish whether the extension granted was to the 14 or the 16 of August. The applicants clearly requested an extension to the 16, but this was on the basis of incorrect advice. Furthermore, no extension of time for the period 14 June to 16 June has been allowed - and absent such an extension, the application must be treated as having lapsed at the end of 14 June. I could consider applying s.223(1) now to cover the period of 14 June to 16 June. However (and particularly having regard to the fact that the applicants were advised that the extension was granted to 14 August) in my view the preferable course of action is to treat the extension of time as having been granted from 14 June to 14 August. In so doing, I note that there is clearly justification for an extension of time for acceptance of two days, to 16 August 1993, under ss.223(1) - based on the incorrect advice of the date for acceptance which was given by Mr F.
Errors Surrounding the Purported Acceptance
On 30 August, Mr F purported to accept the application, in the erroneous belief that he could validly accept the application as of 12 July. On consideration of the evidence of Dr B and Mr F, it is apparent that:
-on 30 August, they both believed that the application was ready for acceptance;
-both believed that the application could not be accepted that day, because an extension of time for acceptance to 30 August (or beyond) had not been granted;
-Dr B considered a s.223(1) extension was justified to 12 July, and that this extension would be sufficient to allow acceptance to occur; and
-Mr F believed that the problem with the final date for acceptance could be overcome by dating the acceptance document as 12 July.
There was clearly an error when Mr F, on 30 August, purported to accept the application on 12 July. However, it is also clear that there was an intention on 30 August to accept the application, and that the only barrier then to acceptance was that the final date for acceptance had expired.
In these circumstances, if there was a lawful basis for the application to be accepted on 30 August (specifically, if there were any extensions of time to extend the time for acceptance that ought to have been granted at that time), the failure of Dr B to grant those extensions such that the application could be lawfully accepted on 30 August, constitutes an error or omission within the meaning of ss.223(1).
To properly consider this matter, it is necessary to review the processing of the file in the period after Mr Thomas filed his response to the second examination report. A review shows that:
-all documents necessary to achieve acceptance were filed on 9 July; however consideration could not be given to them until an extension of time for acceptance past 14 June had been granted (although it would appear that Mr F did consider the amendments before the extension was granted, and had discussions with Mr Thomas concerning the amendments);
-the fees necessary for the s.223 request were not paid until 26 July 1993 - and there was thus (properly) no consideration of the substance of the s.223 request until after that date;
-the applicants were advised of the lack of justification for their s.223 request on 16 August - the last day for the extension period as nominated on the request for extension of time, and 2 days after the date the extension was ultimately granted to (see above).
I note that in these circumstances the applicant had no opportunity to provide further justification for the s.223 request before the expiration of the extended time for acceptance that had been sought.
-the applicants filed further material to support their s.223 request, on 17 August;
-on 2 September Dr B granted the extension of time to 14 August, with no further relevant
information having been provided after 17 August.
From the above, the following is apparent:
As the granting of the extension of time to 14 August occurred on 2 September with there being no further information over and above that available to Dr B on 30 August, there is no reason why that extension should not have been granted on 30 August.
As I noted above, the applicant's were given erroneous advice as to the date for which the extension should be applied for - and that an extension of time under ss.223(1) was justified from 14 August to 16 August.
There was a delay within the Patent Office of over two weeks in the consideration of the s.223 request filed on 9 July. The applicant paid the fees for that request on 26 July. Nevertheless, and due in part to explanations being obtained from Mr F and a clerical officer regarding certain actions on the file, the file did not timely reach me; as a result, my consideration of that s.223 request did not occur until 16 August. Furthermore, this delay precluded the applicant from providing further information in support of their request before the final date for acceptance (if the requested extension was granted) - information which apparently led to Dr B being satisfied that the extension was justified. Clearly, if the problems with the s.223 request had been communicated earlier, so that the applicants could have provided their further information earlier, the delegate would have been in a position to grant the extension before 14 (or 16) August - consequently the application could have been lawfully accepted by that date. As a result, I conclude that there is a clear basis for an extension of time under s.223(1) of 14 days (at least), commencing on 16 August - that is, up until 30 August.
That is, analysis of the material on file shows that an extension of time for acceptance, from 14 August to 30 August, is justified on the basis of errors or omissions on the part of the Commissioner.
Crucially, all the information relating to the above justification was present on the file on or before 30 August, and therefore known to the Commissioner. Consequently, the failure of Dr B (as the responsible delegate of the Commissioner) when considering the file on August 30, to:
grant the extension of time under s.223(2) to 14 August, (which he subsequently granted on 2 September with no further information); and
ii.recognise that the material on file justified an extension of time for acceptance under s.223(1), to 30 August
was itself an error or omission of the Commissioner - indeed, it is the crucial error or omission in the sense that it was this error or omission that prevented acceptance from occurring within the required time (that is, by 30 August).
Consequently I conclude that, had it not been for errors or omissions of the Commissioner, the application would have been lawfully accepted on 30 August 1993 - and that therefore a further extension of time under s.223(1) to the date of this decision, is justified so as to allow acceptance to occur.
In coming to this conclusion, I am mindful that on 23 August Jiejing filed a letter requesting to be advised of any attempt to restore the application - and the practice of the Commissioner in such circumstances (which I have previously stated). It may be argued that:
there was a relevant error or omission of the Commissioner in that the letter did not reach the file until after 30 August; and
ii.had the letter timely reached the file, acceptance could not have occurred on 30 August - as the Commissioner would have sought advice from Jiejing as to whether they objected or not.
To that extent, I could now invite Jiejing to indicate whether they object to the grant of the extension of time under ss.223(1) to 30 August. However the present hearing has canvassed the issues of ss.223(1), and Jiejing has not raised any issue which
would lead me away from granting that extension of time.
Also, if I conceptually put the parties in the respective positions they should have had on 30 August, and assume that Jiejing then objected to the extension of time to 30 August, the Commissioner would nevertheless have found the extension justified as per my findings above. Additionally, a consequence of this conceptual environment is that any enquiries of Jiejing (and any resultant proceedings) would have delayed acceptance past 30 August. However the Commissioner would then proceed to grant an extension of time under s.223(2)(b) from 30 August to the date on which he was satisfied that he could allow the extension to 30 August - as the determination of possible objections is clearly beyond the control of the applicants (see, for example, Nordson Corp v Toyo Seikan 5 IPR 388, (1986) AIPC 90-272).
Consequently, although there are a number of different ways I can proceed, I consider the most practical is to grant an extension of time for acceptance under ss.223(1) from 14 August 1993 to the date of this decision, on the basis that any objections that Jiejing might have raised had their letter been placed on the file before 30 August have been dealt with in the present proceedings.
Discretionary Considerations
According to ss.223(1), an extension of time MUST be granted if there has been a relevant error or omission on the part of the Commissioner - that is, there is no provision for the exercise of any discretionary power in the granting of a ss.223(1) extension of time.
However, if I am wrong on this, I think the comments of Kitto J in Kaiser Aluminium and Chemical Corporation v. Reynolds Metal Company (1969) CLR 136 (at page 158) are most apposite:
"In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be."
In the present case, there have been numerous errors of the Commissioner in the processing of the application. Although not per se the subject of this decision, it seems that there have probably been errors on the part of the applicants. The matter of the time for acceptance of an application is very much a procedural issue (albeit an important issue), but one in which the merit of the invention is not canvassed. If discretion was a factor to be considered, in the present case I would think it most appropriate for the application to be accepted and run the gauntlet of an opposition on its merits, rather than be shut out through a lamentable failure to gain acceptance within the prescribed time.
Decision of the Federal Court re Petty Patent 616154
Petty patent application no. 73544/91 for an invention entitled "Symbol Definition Apparatus" was lodged on 19 March 1991 as a Section 51 (1952 Act) further application derived from the present application. It was subsequently accepted under number 616154, and later was the subject of Federal Court proceedings between the parties which was heard in late 1992; Cooper J handed down his decision on 24 December 1993, finding (inter alia) that the petty patent did not claim patentable subject matter, the claims had the date of their filing as proposed amendments as their priority date, and that the patent should be revoked in its entirety.
From a consideration of that decision, and a superficial comparison of the claims of the present application with the petty patent, I note:
-claim 1 of the petty patent is similar to claim 1 of the present application (as proposed to be amended) - indeed sufficiently similar for the examiner to object pursuant to ss.64(2);
-the basis for the invalidity finding would apparently apply equally to many (if not all) the claims of the present application; and
-if the finding regarding priority dates applies to the claims proposed for the present application, there is the possibility that those proposed claims are not in substance disclosed in the specification as filed, and may additionally lack novelty having regard to the specification of an earlier petty patent (583008) - which derived from the same provisional application as the present application.
That is, prima facie at least some of the proposed claims in the present application are invalid. As a result, if I were to now accept the application, I would be doing so in the knowledge that there are prima facie lawful grounds of objection.
If it were not for errors or omissions of the Commissioner, this application would have been accepted before the decision of Cooper J; the effect of Cooper J's decision may have arisen in a subsequent opposition, but in any case would likely have been dealt with by the Commissioner in a `bar-to-sealing' action (see Re Applications by Gould Inc 13 IPR 644). But the fact remains that the application has not yet been accepted, and I do not think that the Commissioner can now proceed to accept the application in the knowledge of that decision. To do so would be to place an unnecessary burden on the public; knowingly accepting an application incorporating a prima facie invalid claim creates an unnecessary need for someone to oppose the application, and the possibility of an invalid patent being otherwise knowingly granted.
On the other hand, I cannot now refuse the application, as I have not heard the applicants on the matter of the validity of the invention claimed. In this regard, I also consider it would be a denial of natural justice if I were to grant an extension of time for acceptance until the date of this decision, and then deny the applicant any possibility of amending the present application to attempt to overcome objections that arise pursuant to the decision of Cooper J, through the absence of any further time to deal with the present application.
In my view, the circumstance of my now finding that the application is prima facie not in order for acceptance (following the decision of Cooper J) is a circumstance beyond the control of the applicant (and, arguendo, an error or omission of the Commissioner through his not previously identifying the ground of invalidity). This being the case, I consider it appropriate to grant an extension of time of 2 months from the date of this decision, under the provisions of section 223(2)(b) [or, alternatively, 223(1)], to allow the applicants time to propose further amendments to their specification. In granting this extension, I emphasise:
all lawful objections to the application must be overcome by the end of that period - otherwise the application will not be accepted;
if the applicants want to be heard by the Commissioner on the applicability of the decision of Cooper J to the present application, they should make a request to be heard as soon as possible.
Costs
At the hearing the matter of costs was not addressed, due largely to the lateness of conclusion of the hearing. The parties are at liberty to make submissions, or to seek a hearing, in the matter of costs, within 2 months of the date of this decision.
Conclusion
I have found that an extension of time under ss.223(1), for acceptance, is justified from 14 August 1993 to 30 August 1993, and from then to the date of this decision. I consequently grant those extensions of time.
I further find that as a result of the decision of Cooper J in the matter of Petty Patent 616154 (divided from the present application), the applicant is entitled to a further extension of time - of 2 months from the date of this decision - under the provisions of either s.223(2)(b) or 223(1), in order to address matters arising from that decision. I consequently grant that extension of time.
I am remitting the application to an examiner, to forthwith issue an examination report raising objections that arise pursuant to the decision of Cooper J.
As a result of this decision, there is no need for the applicants to pursue the request under ss.223(2) that they filed on 4 January 1994.
D Herald
Assistant Commissioner of Patents
Counsel for the applicant : J.J. Garnsey
Patent attorneys for the opponent : G.R. Cullen & Co., Brisbane